TTABlog Test: Is SELECT BY LANDRY'S Primarily Merely a Surname for a Customer Reward Program?

The USPTO refused to register the mark SELECT BY LANDRY'S, in standard character form, for a "Customer incentive award program, namely, a restaurant and entertainment customer loyalty program that provides discounts and related benefits to reward repeat customers," deeming the proposed mark to be primarily a surname under Section 2(e)(4). Examining Attorney Sahar Nasserghodsi required a disclaimer of SELECT, but the applicant maintained that the USPTO routinely treats the term SELECT as a distinctive term for marks registered in connection with incentive award programs, and therefore the mark as a whole is not primarily merely a surname. In re Landry’s Trademark, Inc., Serial Nos. 97746646 and 98024609 (February 14, 2025) [not precedential] (Opinion by Judge George C. Pologeorgis).

The word mark: The Board, as usual, applied the Benthin factors (In re Benthin Management GmbH, (Serial No. 74340080), 1995 WL 789509, at *2-3 (TTAB 1995)). The surname LANDRY appears more than 101,000 times in the Lexis+ surname database, leading the Board to conclude that LANDRY "is not rarely used or encountered as a surname, and the public has been exposed to and will perceive LANDRY as a surname." LANDRY has no recognized meaning other than as a surname, and no one associated with the applicant is named LANDRY, but it does have the structure and pronunciation of a surname.

Taking into consideration all relevant evidence of the public’s perception which is of record and applying the relevant Benthin factors to such evidence, we find that the primary significance of LANDRY’S to the purchasing public is that of a surname.

But that was not the end of the story. The Board then considered whether "the primary significance of the mark as a whole in connection with the recited services is that of the surname." (Emphasis added).

The Examining Attorney, relying on dictionary definitions, third-party disclaimers, applicant's disclaimer of SELECT CLUB in a prior registration, and two Board decisions, argued that the term SELECT is merely descriptive of applicant’s identified services and therefore does not detract from the surname significance of the proposed mark. Applicant Landry's asserted that SELECT has multiple meanings, that a multi-step reasoning process is required to glean any relevant meaning from the term, and that the USPTO "routinely treats the term SELECT as a distinctive term for marks registered in connection with incentive award programs."

The Board observed that the addition of a generic or merely descriptive term to a surname does not immunize the proposed mark from a Section 2(e)(4) refusal. (E.g., WEISS WATCH COMPANY in In re Weiss Watch Company, Inc., 123 USPQ2d 1200 (TTAB 2017)). The mark will be evaluated as to its primary significance as a whole. "A key element in this determination is the relative distinctiveness of the additional term(s) in the mark."

The Board sided with the Examining Attorney that SELECT is merely descriptive of Applicant's services: "the use of SELECT in the term SELECT BY LANDRY’S describes a set of desirable benefits available not to all customers but a select group of customers, and would be immediately so perceived by the relevant consumers." As to the third-party registrations, the Board found them insufficient to cast doubt on the other evidence of record. In any case, the Board is not bound by previous decisions of other examining attorneys.

The Board then found the entire mark SELECT BY LANDRY'S to be primarily merely a surname, and so it affirmed the Section 2(e)(4) refusal.

The Composite Mark: Applicant also sought to register the word-plus-design mark shown above, for the same services. The Examining Attorney did not refuse registration under Section 2(e)(4). [See TMEP Section 1211.01(b)(ii) regarding a surname combined with a design element]. However, applicant was required to disclaim the word SELECT. Based on the finding of descriptiveness, the Board affirmed the disclaimer requirement, but allowed applicant thirty days within which to submit the required disclaimer.

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TTABlogger comment: The Office also objected to the phrase "and other benefits" in the recitation of services as being indefinite. The Board disagreed, since that phrase appears in other registrations as well in the ID Manual, for other services.

Text Copyright John L. Welch 2025.